Last year, ClearCorrect petitioned for ex parte reexaminations , asking the United States Patent and Trademark Office (USPTO) to review several of Align’s patents.* These ex parte reexaminations are currently underway. So far, the USPTO has indicated agreement with ClearCorrect's position that all 75 claims of the patents in question are invalid.

Meanwhile, our legal team has also petitioned for an inter partes review of Align Technology’s patent #6,669,037 (’037) with the USPTO Patent Trial & Appeal Board. (Align has not accused ClearCorrect of infringing this patent, but it contains claims similar to those in other patents that Align has asserted against us.)

An inter partes review occurs between two parties, with the USPTO judges acting as examiners. This approach allowed ClearCorrect’s legal team to directly present key examples of “prior art” that predate Align’s in an effort to question ‘037’s patentability.

Phew! Here’s the “great news” part:

On May 23rd, 2016, the Patent Trial & Appeal Board accepted ClearCorrect’s petition and decided to institute a trial to reexamine key claims of the ’037 patent. The board determined that there is a “reasonable likelihood that ClearCorrect would prevail in showing that claims 1, 2, 9, and 10 of the ’037 patent are unpatentable.” (Over 70% of challenges accepted by the board result in cancellation of patent claims.)

Scott A. McKeown (a partner with the Washington, DC law firm Oblon, McClelland, Maier & Neustadt), who is leading our effort at the patent office, explains:

“We now have the board's feedback on our key ground of invalidity, which is presented in the inter partes review. We now know there is strong likelihood for a positive outcome for our pending reexamination proceedings. This is exactly what we hoped to accomplish when we filed the ’037 review.”

Cool! So what’s going on now?

We are still awaiting final decisions in the ex parte reexaminations. Ex parte reexaminations tend to take one to two years to resolve. Inter parte reviews can be faster—we expect a final decision in this case within a year. Align’s one remaining lawsuit against us is still stayed as the ITC deliberates whether they want to try their appeal again with the Supreme Court.

The board’s decision to review this patent is the latest in a series of legal victories for ClearCorrect. It is also indicative of reasoning that should also apply to the remaining lawsuit with Align. There is little reason to think that Align’s claims will fare better outside of the USPTO, since the same or similar patents will be cited. Align’s chances for success are rapidly diminishing as their claims are repudiated at every turn.